Versata Soft., Inc. v. Callidus Soft.: CAFC Vacates Previous Opinion Due to 11th Hour Settlement By Parties

Category: Civil Procedure  
By: Jesus Hernandez, Blog Editor/Contributor 
TitleVersata Soft., Inc. v. Callidus Soft., No. 2014-1468 (Fed. Cir. Feb. 27, 2015).
Issue[The Fed. Cir. issued opinion on appeal, but joint petition to dismiss case submitted to the district court was not presented to CAFC until after opinion on underlying appeal issued] Due to the unique timing and sequence of events, we stayed issuance of the mandate and directed the parties to respond whether the circumstances require that we vacate our prior opinion.
Versata Soft., Inc., at *2 (text added).
HoldingBecause the parties’ voluntary and unconditional dismissal mooted the appeal before the release of our prior opinion, we vacate the opinion and dismiss the appeal.
Id. at *2.
Editor Note
This case vacates a previous CAFC precedential opinion issued on the merits of the case, and prior to the controversy being settled. Previous opinion available here.
Procedural HistoryOn November 20, 2014, this court issued an opinion in this interlocutory appeal. The opinion, reported at 771 F.3d 1368, reversed the order of the district court denying a stay of trial court proceedings pending the outcome of post-grant review of the asserted patents under the Patent Office’s Transition Program for Covered Business Method (CBM) Patents. Late on November 19, 2014, however, the parties filed with this court a joint request to dismiss the appeal, noting that they had concurrently filed a joint and unconditional stipulation of dismissal of the underlying complaint with the district court pursuant to Federal Rule of Civil Procedure (FRCP) 41(a). This joint request was not presented to the judges until after the release of the opinion.
Versata Soft., Inc., at *1-2.
Legal Reasoning (CHEN, Mayer, Linn)
Ninth Circuit PrecedentWe have yet to address this precise scenario but find several orders from our sister circuits informative. For example, as explained by the Ninth Circuit, the timing of events in such situations is critical because: There is a significant difference between a request to dismiss a case or proceeding for mootness prior to the time an appellate court has rendered its decision on the merits and a request made after that time. Different considerations are applicable in the two circumstances. When we refrain from deciding a case on grounds of mootness, we do so based upon the limitations of our power. We do not have the constitutional authority to decide moot cases. Armster v. U.S. Dist. Court for Cent. Dist. of Cal., 806 F.2d 1347, 1355 (9th Cir. 1986). Accordingly, when an appeal is moot before issuance of the appellate court’s opinion, it is appropriate to vacate that opinion. […] Because the question of when the district court action was dismissed is a procedural issue not unique to patent law, we apply regional circuit law. […]
Versata Soft., Inc., at *2 (some internal citations omitted).
Appeal MootIn First Nat’l Bank v. Marine City, Inc., 411 F.2d 674 (3d Cir. 1969), the Third Circuit explained the effect of such a stipulation. “The entry of such a stipulation of dismissal is effective automatically and does not require judicial approval.” Id. at 677. See also In re Bath & Kitchen Fixtures Antitrust Litig., 535 F.3d 161, 165 (3d Cir. 2008) (“[A] filing under [FRCP 41(a)(1)(A)(i)] is a notice, not a motion. Its effect is automatic: the defendant does not file a response, and no order of the district court is needed to end the action.”). Because the parties’ joint stipulation was filed in the district court the day before the issuance of this court’s opinion on November 20, 2014, the appeal was moot when our opinion issued.2 There was no longer a controversy whether district court proceedings should be stayed pending disposition of the post-grant review, because the matter was no longer extant.
Id. at *4-5.
IT IS ORDERED THAT: (1) The court’s opinion issued on November 20, 2014 is vacated. (2) This appeal is dismissed. The previous stay of the mandate is lifted. Each side shall bear its own costs.
Versata Soft., Inc., at *5.
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